APPLE INC.

Patent Trials and Appeals Board

May 17, 2021

2021001361 (P.T.A.B. May. 17, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/213,852 03/14/2014 Donald W. PITSCHEL P14532US1/77870000149101 8677
150004 7590 05/17/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/17/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD W. PITSCHEL and THOMAS R. GRUBER

Appeal 2021-001361
Application 14/213,852
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14–20, and 22–26. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 10,
2021.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Apple
Inc. Appeal Br. 4.
Appeal 2021-001361
Application 14/213,852

2

STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention “relate[s] generally to digital assistants, and
more specifically to digital assistants that intelligently provide training
opportunities and assistance to users.” Spec. ¶ 2.
Claims 1, 12, 16, and 22 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A computer-implemented method for operating a digital
assistant, comprising:
at a device having one or more processors and memory:
receiving, from a user, a first speech input spoken in a
first language;
generating a text representation of the first speech input
spoken in the first language;
inferring a user intent based on at least the generated text
representation;
identifying a second speech input associated with the
same intent as the inferred user intent, wherein the second
speech input is associated with a second user different than the
user;
in response to determining that a meaning of at least one
term in the first speech input varies by location, generating a
plurality of alternative expressions of the first speech input in
the first language based on the inferred user intent and a current
location of the user, wherein the plurality of alternative
expressions include the second speech input; and
providing feedback to the user introducing the plurality
of alternative expressions as used in the current location to
express the inferred user intent.

Appeal 2021-001361
Application 14/213,852

3

References
The prior art relied upon by the Examiner is:
Name Reference Date
Campbell US 2006/0080098 A1 Apr. 13, 2006
Kamatani et al.
(“Kamatani”)
US 2006/0293876 A1 Dec. 28, 2006
Ramsey et al. (“Ramsey”) US 2007/0106497 A1 May 10, 2007
Tsui et al. (“Tsai”) US 2008/0261572 A1 Oct. 23, 2008
Sata et al. (“Sata”) US 2011/0231432 A1 Sept. 22, 2011
Lee et al. (“Lee”) US 2012/0290300 A1 Nov. 15, 2012
Yadgar US 2013/0152092 A1 June 13, 2013
Banke et al. (“Banke”) US 2013/0159847 A1 June 20, 2013

Rejections
Claims 1, 3–5, 7, 11, 12, 14, 16, 18–20, 22, and 24–26 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Lee in view of Ramsey and
Banke.
Claims 2, 10, 17, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee in view of Ramsey, Banke, and Kamatani.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee
in view of Ramsey, Banke, and Campbell.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee
in view of Ramsey, Banke, and Sata.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee
in view of Ramsey, Banke, and Yadgar.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee in view of Ramsey, Banke, and Tsui.
Claim 7 is rejected under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement.
Appeal 2021-001361
Application 14/213,852

4

ANALYSIS
Obviousness
The method of independent claim 1 recites, “[a] computer-
implemented method for operating a digital assistant” which includes “a
device having one or more processors and memory” to perform various
steps. Appeal Br., Claims App. The steps in the method include receiving a
first speech input from a user and identifying a second speech input
associated with a second user that is different from the first user, where the
inferred intent of each speech input is the same. See id. Also, claim 1
recites the steps of “generating a plurality of alternative expressions of the
first speech input in the first language based on the inferred user intent . . . ,
wherein the plurality of alternative expressions include the second speech
input” and “providing feedback to the user introducing the plurality of
alternative expressions as used . . . to express the inferred user intent.” Id.
Accordingly, claim 1, among other things, calls for the step of providing
feedback to the user who provides the first speech input introducing the
plurality of alternative expressions, including the second speech input.
Independent claims 12, 16, and 22 include the same or similar recitations as
claim 1. Id.
The Examiner concludes that the combined teachings of Lee, Ramsey,
and Banke teach the subject matter of claim 1. Non-Final Act. 9–13. More
specifically, the Examiner finds Lee, which is directed to a foreign language
study, substantially teaches the subject matter of claim 1, including
“providing feedback to the user introducing the plurality of alternative
expressions to express the inferred user intent.” Id. at 9–10. The Examiner
also finds that Lee fails to teach the step of identifying a second speech input
Appeal 2021-001361
Application 14/213,852

5

associated with a second user and the plurality of alternative expressions
including the second speech input. See id. at 9–11. The Examiner relies on
Ramsey’s teachings, and not Banke’s teachings, to remedy this deficiency.
Id. at 11 (citing Ramsey ¶¶ 105, 109–112); see Ans. 33–42. The Examiner
determines:
[I]t would have been obvious to one of ordinary skill in the art
. . . to modify the invention of Lee in view[] of Ramsey; for
example, by storing additional data into the system’s database;
such as one or more speeches received from one or more users
(e.g. speech inputs received from one or more language experts;
speech inputs received from users who speak the language
fluently, etc.); and wherein the system further displays, as one
or more of the alternative expressions, one or more of the stored
speeches that match the user’s intent, etc., in order to enable the
system to efficiently train the user regarding one or more
preferred expressions that the user needs to practice when
expressing a given intent, etc.; and thereby improving the
effectiveness of the system.
Id. The Examiner’s rejection relies on a finding that Ramsey teaches a
plurality of alternative expressions including a second speech input that is
provided as feedback to the user.
The Appellant argues that the Examiner’s rejection fails to combine
the teachings of Lee, Banke, and Ramsey to suggest the subject matter of
claim 1. See Appeal Br. 13–20; Reply Br. 5–12. The Appellant submits that
Ramsey teaches techniques for “updat[ing] initial mappings for scripts based
on same intent speech” and “add[ing] new keywords to scripts or initial
mappings, based on user interactions with displayed scripts.” Reply Br. 6
(emphasis omitted). The Appellant contends “the Examiner conflates and
confuses these techniques . . . [to] arriv[e] at the erroneous conclusion that
Appeal 2021-001361
Application 14/213,852

6

Ramsey teaches updating scripts with ‘same intent’ speech.” Id. The
Appellant’s argument is persuasive.
Ramsey discloses a Natural Language Script Interface (NLSI) for
“automatically interpreting natural language inputs to select, execute and/or
otherwise present one or more scripts or other code[s] to the user for further
user interaction.” Ramsey Abstract; see also id. ¶¶ 105, 109. Ramsey’s
system “learn[s] how different users are phrasing the same intent or desired
action” and then “updat[es] the initial mappings 650 for use in better
identifying tasks or scripts in response to future user queries.” Id. ¶ 112
(emphasis omitted). Although Ramsey’s system accepts a second speech
input from a second user, the speech is not provided as feedback to the user,
who provides the first speech input, as an alternative expression. Rather, the
second speech input (i.e., learned information/behavior) from a second user
is provided as feedback to the system (e.g., initial mappings) to improve the
identification of a script (i.e., feedback). See Ramsey ¶¶ 74–76, 81, 84
(“[k]eywords are terms that might be used to identify a particular script”),
85, 105, 109–112, 144 (“learned behavior of the user is used to enhance
script selection and/or Slot filling”), 154, 163–167, Fig. 8 (showing GUI
user interface window 800 having natural language inputs 810 and scripts
820–850). In view of the foregoing, we determine that the Examiner fails to
adequately support the finding that Ramsey teaches a plurality of alternative
expressions including a second speech input that is provided as feedback to
the user. Accordingly, we determine that the Examiner’s rejection lacks
adequate support.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1, 12, 16, and 22 as unpatentable over Lee in view of Ramsey and
Appeal 2021-001361
Application 14/213,852

7

Banke. We likewise do not sustain the Examiner’s rejection of dependent
claims 3–5, 7, 11, 14, 18–20, and 24–26.
Further, the Examiner fails to rely on Kamatani, Campbell, Sata,
Yadgar, or Tsui in any manner that would remedy the deficiency in the
Examiner’s rejection of independent claims 1, 12, 16, and 22 as discussed
above. Thus, we do not sustain the Examiner’s rejections of claims 2, 6,
8–10, 15, 17, and 23.
Written Description
Claim 7 recites,
wherein generating the plurality of alternative
expressions of the first speech input in the first language further
comprises:
identifying a third speech input as previously provided by
a native speaker of the first language, wherein a task flow
executed for the respective user intent had been satisfactory to
said native speaker.
Appeal Br., Claims App.
The Examiner rejects claim 7 as failing to comply with the written
description requirement because “‘identifying a third speech input’, which is
executed subsequent to the step of ‘identifying a second speech input’, as
recited in claim 1.” Non-Final Act. 7 (emphasis omitted). The Examiner
acknowledges Specification at paragraph 16, which describes with added
emphasis:
In some embodiments, generating the one or more alternative
expressions of the first speech input in the first language further
includes: identifying a second speech input previously provided
by a native speaker of the first language, wherein the second
speech input had been associated with a respective user intent
that is identical to the inferred user intent of the first speech
input, and wherein a task flow executed for the respective user
intent had been satisfactory to said native speaker; and utilizing
Appeal 2021-001361
Application 14/213,852

8

the second speech input as one of the alternative expressions of
the first speech input. The speech input previously provided by
the native speakers are good source of example expressions
showing customary usage of language and vocabulary in a
particular region.
The Examiner understands the foregoing description to support the
“identifying” step of claim 1, but not the additional “identifying” step of
claim 7. See Non-Final Act. 7–8; Ans. 49–56.
The Appellant argues that “one skilled in the art would have
recognized the identification of these second and third speech inputs as
supported pursuant to the written description requirement.” Reply Br. 16.
The Appellant contends that “the [S]pecification clearly outlines how speech
inputs (i.e., a second speech input, a third speech input) are provided by
native speakers for use as potential alternative expressions.” Id. at 20. In
other words, one of ordinary skill in the art reading the Specification would
understand that paragraph 16 of the Specification is not limited to “only
[being] capable of identifying a single speech input from a different speaker,
but no more than a single speech input.” Appeal Br. 25. The Appellant
submits that the failure to literally describe a third input is not a proper basis
for a written description rejection. Id. at 26. The Appellant’s argument is
persuasive.
We agree with the Appellant that “[o]ne skilled in the art would have
readily recognized [that paragraph 16] support[s] the notion that speech
input provided by native speakers (i.e., a plurality of speech inputs) are used
as alternative expressions to express an inferred intent.” Reply Br. 16. In
this case, we understand the basis for the Examiner’s rejection to be on a
reading of the Specification’s paragraph 16 that is unduly narrow and apart
from how one of ordinary skill in the art would understand the paragraph.
Appeal 2021-001361
Application 14/213,852

9

Further, we determine that the Appellant correctly construes claim 7 to lack
temporal constraints, e.g., “[t]he identifications could occur simultaneously,
one could occur before the other, or vice versa.” See id. at 17–19.
Thus, we do not sustain the Examiner’s rejection of dependent claim 7
as failing to comply with the written description requirement.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–5, 7,
11, 12, 14,
16, 18–20,
22, 24–26
103(a) Lee, Ramsey,
Banke

1, 3–5, 7, 11,
12, 14, 16, 18–
20, 22, 24–26
2, 10, 17, 23 103(a) Lee, Ramsey,
Banke,
Kamatani
2, 10, 17, 23
6 103(a) Lee, Ramsey,
Banke,
Campbell
6
8 103(a) Lee, Ramsey,
Banke, Sata
8
9 103(a) Lee, Ramsey,
Banke,
Yadgar
9
15 103(a) Lee, Ramsey,
Banke, Tsui
15
7 112(a) Written
Description
7
Overall
Outcome
1–12, 14–20,
22–26

REVERSED